By Eric Schweibenz
On February 15, 2013, ALJ David P. Shaw issued the public version of Order No. 90 (dated January 16, 2013) in Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800).

By way of background, this investigation is based on a complaint filed on behalf of InterDigital Communications, LLC, InterDigital Technology Corporation, and IPR Licensing’s (collectively, “InterDigital”) alleging violation of Section 337 by Respondents Huawei Technologies Co., Ltd., FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA),  ZTE Corp., ZTE (USA) Inc., and Nokia in the importation into the U.S. and sale of certain wireless devices with 3G capabilities and components thereof that infringe one or more claims of U.S. Patent Nos. 7,349,540; 7,502,406; 7,536,013; 7,616,970; 7,706,332; 7,706,830; and 7,970,127.  See our August 29, 2011 post for more details about this investigation.

According to Order No. 90, Respondents ZTE Corp. and ZTE (USA) Inc. (collectively, “ZTE”) filed a motion to terminate the investigation as to ZTE’s V768 device, which is also known as the Pascal or Concord.  Both InterDigital and the Commission Investigative Staff (“OUII”) opposed ZTE’s motion.  In support of its motion, ZTE argued that it disclosed the V768 and provided all relevant discovery regarding the device and InterDigital failed to articulate any infringement theory regarding the V768 and its Broadcom chipset.  Further, in response to ZTE’s Interrogatory No. 11, InterDigital identified the V768 as infringing several asserted claims, but later removed the V768 from its list of accused products and the parties’ Joint Statement Regarding Identification of Accused Products.  Accordingly, ZTE argued that if the ALJ and the ITC do not make it clear that the V768 is not covered by any exclusion order issued in this investigation, ZTE will face potential disruption to legitimate trade in a non-accused device.  In opposition, InterDigital argued that ZTE’s motion should be denied because ZTE effectively sought, without a hearing based on an evidentiary record, an advisory opinion that a non-accused device does not infringe the asserted patents.  OUII argued that inasmuch as InterDigital has neither accused the V768 device of infringement nor has it presented evidence of infringement by the V768 device, the record is clear that the V768 device is not at issue in this investigation and would not be subject to an exclusion order, if any, that issues from this investigation. 

In the Order, ALJ Shaw agreed with the arguments made by InterDigital and OUII.  Specifically, ALJ Shaw determined that ZTE’s V768 device has not been identified as an accused product in this investigation, and InterDigital has not presented evidence that the V768 device and thus “[s]hould the undersigned issue an initial determination finding that a violation of section 337 has occurred in this investigation, the V768 would not be included among those products found to infringe the asserted patents.”  Lastly, ALJ Shaw noted that a “separate initial determination terminating the V768 from this investigation is not warranted.”